USPTO Patents Application 10567929

United States Patent and Trademark Ofhce

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark OtBce

Address: COMMISSIONER FOR PATENTS

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO. CONFIRMATION NO.

10/567,929

11/09/2006

Michael Duerr

22850 7590 02/17/2009

OBLON, SPIVAK, MCCLELLAND MAER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

285450US8X PCX

HO, ANTHONY

PAPER NUMBER

NOTIFICATION DATE | DELIVERY MODE
02/17/2009 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the

following e-mail address(es):

patentdocket @ oblon.com
oblonpat@oblon.com
j gardner @ oblon. com

PTOL-90A (Rev. 04/07)

KJttiVrXi nvrliyjts OUff Iff fcff Jr

Application No.

10/567,929

Applicant(s)

DUERR ET AL.

Examiner
ANTHONY HO

Art Unit

2815

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
eamed patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )^ Responsive to communication(s) filed on 21 January 2009 .
2a )□ This action is FINAL. 2b)|3 This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-6.8-13 and 15-26 is/are pending in the application.

4a) Of the above claim(s) 15.19.25 and 26 is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) IEI Claim(s) 1-6.8-13.16-18 and 20-24 is/are rejected.
/)□ Claim(s) is/are objected to.

8) 0 Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) 0 The drawing(s) filed on is/are: a)^ accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held In abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)n All b)n Some * c)^ None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1 ) ^ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftspereon's Patent Drawing Review (PTO-948) Paper No(s)/IVIail Date.

3) □ Information Disclosure Statement(s) (PTO/SB/08) 5) □ Notice of Informal Patent Application

Paper No(s)/Mail Date . 6) □ Other: .

PTOL-T26'(Rev^'o8-0^^

Office Action Summary

Part of Paper No./Mail Date 20090130

Application/Control Number: 10/567,929 Page 2

Art Unit: 2815

DETAILED ACTION

This is in response to amendment to application no. 10/567,929 filed on January 21 ,
2009.

Claims 1-6, 8-13 and 15-26 are presented for examination.
Claims 15, 19 and 25-26 stand withdrawn.

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless -

(b) the invention was patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of application for patent in the United
States.

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

Claims 1-4, 6, 8-10, 13, 16-18 and 21-24 are rejected under 35 U.S.C. 102(b) as

anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Kymakis at

al, "Single-Wall Carbon Nanotube/Conjugated Polymer Photovoltaic Devices," Applied

Physics Letters, American Institute of Physics. New York, US, vol. 80, no. 1, 7 January

2002 (2002-01-07), pages 1 12-1 14 with support of Vinciguerra et al (US Patent

7,329,902) (teaching reference).

Application/Control Number: 10/567,929 Page 3

Art Unit: 2815

In re claims 1 and 13, Kymakis et al discloses a photovoltaic device, comprising a
composition of carbon nanotubes and of at least one organic compound (Figure 1 ; page
1 1 2, column 1 , lines 24-26).

Vinciguerra et al teaches the band gap of SWNTs ranges in the interval of 0.5-1 .0 eV
(column 4, lines 3-5).

In re claim 2, Kymakis et al discloses the first and second electrodes are made of ITO
and aluminum (page 113, column 2, line 9).

In re claim 3, Kymakis et al discloses the material used in the device is P30T.

In re claim 4, Kymakis et al discloses the carbon nanotubes are a mixture of metallic
and semiconducting carbon nanotubes (page 112, column 1, line 36 - column 3, line 2).

In re claim 6, Kymakis et al discloses the carbon nanotubes have a diameter of 1 .4 nm
(page 112, column 2, line 9).

In re claim 8, Kymakis et al discloses the band gap of at least one of the hole conductor
lies in the range of from about 1 eV to 3 eV (page 1 1 3, column 1 , lines 23-26).

In re claim 9, Kymakis et al discloses the LUMO of P30T is 2.85 eV (page 114, column
1, lines 29-30), its bandgap 2.4 eV (page 113, column 1, line 24), addition of these

Application/Control Number: 10/567,929 Page 4

Art Unit: 2815

values results in a HOMO of 5.25 eV which is greater than the HOMO of the carbon
nanotubes (page 114, column 1, lines 16-17).

In re claim 10, Kymakis et al discloses the composition comprises a mixture of carbon
nanotubes and at least one hole conductor (page 112, column 2, lines 5-17).

In re claim 16, Kymakis et al discloses the hole conductor is one of the listed materials,
P30T.

In re claim 17, the recitation "wherein it is an organic solar cell" in the claim preamble
specifies an intended use or field of use and is treated as nonlimiting since it has been
held that in device claims, intended use must result in a structural difference between
the claim invention and the prior art in order to patentably distinguish the claim invention
from the prior art. If the prior art structure is capable of performing the intended use,
then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136
USPQ 458, 459 (CCPA 1963). A claim containing a recitation with respect to the
manner in which a claimed apparatus is intended to be employed does not differentiate
the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all
the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App.
& Inter. 1987).

Application/Control Number: 10/567,929 Page 5

Art Unit: 2815

In re claim 1 8, Kymakis et al discloses the one of the electrodes is a film or layer of a
transparent material, ITO.

In re claim 21, Kymakis et al discloses a glass substrate.

In re claim 22, it is well known in the art that a flexible polymer substrate is used in
photovoltaic devices.

In re claim 23, the recitation "a combination of the device according to claim 1 with a
circuit, wherein the device acts as an internal power supply" in the claim preamble
specifies an intended use or field of use and is treated as nonlimiting since it has been
held that in device claims, intended use must result in a structural difference between
the claim invention and the prior art in order to patentably distinguish the claim invention
from the prior art. If the prior art structure is capable of performing the intended use,
then it meets the claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136
USPQ 458, 459 (CCPA 1963). A claim containing a recitation with respect to the
manner in which a claimed apparatus is intended to be employed does not differentiate
the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all
the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App.
& Inter. 1987).

Application/Control Number: 10/567,929 Page 6

Art Unit: 2815

In re claim 24, the recitation "a solar cell" in the claim preamble specifies an intended
use or field of use and is treated as nonlimiting since it has been held that in device
claims, intended use must result in a structural difference between the claim invention
and the prior art in order to patentably distinguish the claim invention from the prior art.
If the prior art structure is capable of performing the intended use, then it meets the
claim. In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459
(CCPA 1963). A claim containing a recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the claimed
apparatus from a prior art apparatus if the prior art apparatus teaches all the structural
limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
1987).

Claim Rejections - 35 USC § 103

Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kymakis
et al, "Single-Wall Carbon Nanotube/Conjugated Polymer Photovoltaic Devices,"
Applied Physics Letters, American Institute of Physics. New York, US, vol. 80, no. 1, 7

January 2002 (2002-01-07), pages 112-114 with support of Vinciguerra et al (US Patent
7,329,902) (teaching reference) as applied to claim 1 above, and further in view of
Tsukamoto et al (JP 2003-096313).

Tsukamoto et al discloses the carbon nanotubes are a mixture of multi-walled and
single-walled carbon nanotubes (paragraph 0008).

Application/Control Number: 10/567,929 Page 7

Art Unit: 2815

The advantage is to increase the mobility of the semiconductor device (i.e. paragraph
0005).

Thus, it would have been obvious to one of ordinary skill in the art at the time the
invention was made to have modified the photovoltaic device as taught by Kymakis et al
with the carbon nanotubes are a mixture of multi-walled and single-walled carbon
nanotubes as taught by Tsukamoto et al in order to increase the mobility of the
semiconductor device.

Claims 11 and 12 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Kymakis et al, "Single-Wall Carbon Nanotube/Conjugated Polymer Photovoltaic
Devices," Applied Physics Letters, American Institute of Physics. New York, US, vol. 80,
no. 1 , 7 January 2002 (2002-01-07), pages 112-114 with support of Vinciguerra et al
(US Patent 7,329,902) (teaching reference) as applied to claim 1 above, and further in
view of Forrest et al (US Patent 6,451 ,415).

Forrest et al discloses a multilayer structure for photovoltaic devices (Figure 2D).
The advantage is for efficient charge carrier generation (column 8, lines 51-65).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the
invention was made to have modified the photovoltaic device as taught by Kymakis et al
with a multilayer structure for photovoltaic devices as taught by Forrest et al in order for
efficient charge carrier generation.

Application/Control Number: 10/567,929 Page 8

Art Unit: 2815

Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over Kymakis
et al, "Single-Wall Carbon Nanotube/Conjugated Polymer Photovoltaic Devices,"
Applied Physics Letters, American Institute of Physics. New York, US, vol. 80, no. 1, 7
January 2002 (2002-01-07), pages 1 12-1 14 with support of Vinciguerra et al (US Patent
7,329,902) (teaching reference) as applied to claim 2 above, and further in view of
Ganzorig et al, "Alkali metal acetates as effective electron injection layers for organic
electroluminescent device," Materials Science and Engineering B, Elsevier Sequoia,
Lausanne, Ch, vol. 85, no. 2-3, 22 August 2001 (2001-08-22), pages 140-143.
Ganzorig et al discloses the addition of an LiF, CsF or Li-acetate interlayer between the
Al electrode and the organic hole conducting compound layer (Abstract).
The advantage is to lower the work function of the Al layer and thus enhance hole
transfer from the organic compound to the Al electrode (Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the
invention was made to have modified the photovoltaic device as taught by Kymakis et al
with the addition of an LiF, CsF or Li-acetate interlayer between the Al electrode and the
organic hole conducting compound layer as taught by Ganzorig et al in order to lower
the work function of the Al layer and thus enhance hole transfer from the organic
compound to the Al electrode.

Response to Arguments

Applicant's arguments with respect to claim 1 have been considered but are moot
in view of the new ground(s) of rejection.

Application/Control Number: 10/567,929
Art Unit: 2815

Page 9

Conclusion

Any inquiry concerning tliis communication or earlier communications from tine
examiner should be directed to ANTHONY HO whose telephone number is (571)270-
1432. The examiner can normally be reached on M-Th: 10:30AM-9:00PM EST.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Kenneth Parker can be reached on 571-272-2298. The fax phone number
for the organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/A. H./

Examiner, Art Unit 2815
/Kenneth A Parker/

Supervisory Patent Examiner, Art Unit 2815